Aside from marketing and commercial considerations, choosing a name for your business is an important decision from a legal perspective. Doing it correctly from the beginning can save you a lot of time and expense down the track.
Many businesses are involved in expensive intellectual property related disputes all the time basically because they did not do their homework initially and their brand is too similar to another brand which already exists in the marketplace and which relates to the same or similar goods or services.
Listed below are the key steps and considerations that you should take into account before deciding on your brand:
- Check for existing registered trade marks
A trade mark is, in summary, a sign (e.g. a letter, word, name, number, brand, logo, aspect of packaging, shape, colour, sound or scent) that is used to distinguish the goods or services of a trader from those of others.
Trade marks in Australia are registered with the Australian Trade Marks Office (ATMO). Registration gives the owner a monopoly right over that trade mark in relation to their goods or services, or similar goods or services. Importantly, this protection includes protection against trade marks which are substantially identical or deceptively similar. So even though your trade mark is not exactly the same as someone else’s, you could still be infringing someone else’s rights if it is substantially identical to or deceptively similar to someone else’s mark, and your mark is associated with the same or similar goods or services.
A search of the ATMO’s Online Search System should be conducted by a professional.
Make sure your name/sign is distinctive and unique if you want more protection, and also to minimise risk. Words which describe your goods or services are harder to protect.
- Check for unregistered trade marks
Passing off: Business reputation is protected under the common law tort of passing off. Therefore even if a trade mark has not been registered, it can still be protected.
Misleading and deceptive conduct: Under Australian consumer law, a person (which includes a corporation) must not engage in conduct that is misleading or deceptive or which is likely to mislead or deceive.
In view of the above, you should therefore conduct a search of the marketplace for unregistered trade marks to ascertain whether any existing businesses have a reputation in your proposed name or sign and sell the same or similar goods or services.
- Register your brand
You should register your brand as a trade mark with the ATMO in respect of your goods and services without delay.
Merely registering your company name or business name with the Australian Securities and Investments Commission (ASIC) does not provide any protection. Registering your brand as a trade mark provides:
- an exclusive statutory monopoly in relation to your goods and/or services in Australia;
- an easy way to prevent cybersquatting (the registration of a domain name which incorporates your brand by others);
- much easier and cheaper enforcement of your rights; and
- an “asset” which can be licensed, assigned, and monetised.
- Business name
If you are trading under a name which is different to your personal name, company name or other registered legal name for the business (depending on the business structure that you have chosen), then you need to also register the trading name as a “business name” with ASIC.
The information provided in this article is provided by way of general information only. It does not constitute legal advice, and should not be relied upon as such. Specific independent legal advice should be obtained before deciding to act, or not to act, upon the views expressed or information contained in this article.
Copyright of Heathfield Grosvenor 2017. All rights reserved.
Author: Christopher Chang
Chris is solicitor director of Heathfield Grosvenor Lawyers (www.hglaw.com.au), a law firm based in Sydney which focuses on delivering astute, effective and affordable fixed fee legal solutions in only two areas of expertise, litigation & dispute resolution and corporate & commercial advisory services.